Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA97268
`ESTTA Tracking number:
`08/31/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91167455
`Defendant
`JEC II, LLC
`JEC II, LLC
`1 little West 12th Street
`New York, NY 10014
`
`Correspondence
`Address
`
`MICHAEL R. GILMAN
`KAPLAN & GILMAN, LLP
`900 ROUTE 9 N, 5th Floor
`WOODBRIDGE, NJ 07095-1025
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Motion for Summary Judgment
`Michael R. Gilman
`mgilman@kggd.com
`/Michael R. Gilman/
`08/31/2006
`SJ Motion & MRG Dec with Exs. A & B.pdf ( 55 pages )(2375710
`bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`KERZNER INTERNATIONAL LIMITED,
`
`Opposer/Petitioner and
`Counterclaim Registrant,
`
`Opposition No. 91 167455
`Opposition No. 91 1 71 056
`Cancellation No. 92045034
`
`:
`'
`
`JEC II, LLC,
`
`Applicant/Registrant and
`Counterclaim Petitioner.
`
`JEC II LLC’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON ITS
`
`COUNTERCLAIM FOR CANCELLATION OF U.S. REG. NO. 2,889,998
`AND MOTION FOR SUSPENSION OF THE PROCEEDING
`
`Mail Stop TTAB
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dated: August 31, 2006
`
`Michael R. Gilman
`KAPLAN GILMAN GIBSON & DERNIER LLP
`
`Attorneys for Applicant/Registrant and
`Counterclaim Petitioner
`
`900 Route 9 North
`
`Woodbridge, New Jersey 07095
`(732) 634-7634 phone
`(732) 634-6887 fax
`mgi1man@kggd.com
`
`

`
`TABLE OF CONTENTS
`
`PAGE§S)
`
`INTRODUCTION AND SUMMARY OF ARGUMENT ............................................... .. 1
`
`THE STANDARD OF REVIEW FOR SUMMARY JUDGMENT ................................ .. 5
`
`III.
`
`APPLICABLE LAW AND ANALYSIS .......................................................................... .. 7
`
`A.
`
`To Achieve Federal Registration Of A Service Mark,
`The Services Must Take Place (Be Provided) In The
`United States — Services Provided Solely
`In A Foreign Country, Or Only Promoted, But Not
`Also Provided, In The United States, Are Not Eligible
`For Service Mark Registration .............................................................................. .. 7
`
`(1) The Relevant Lanham Act Provision, 15 US. C. §1127 ............................ .. 7
`
`(2) Linville v. Rivard, 41 U.S.P.Q.2d 1731 (T.T.A.B. 1996),
`ajj”d., Rivard v. Linville, 133 F.3d 1446, 45 U.S.P.Q.2d 1374
`(Fed. Cir. 1998) ......................................................................................... .. 8
`
`(3) Intermed Communications, Inc. v. Chaney, 197 U.S.P.Q. 501
`(T.T.A.B. 1977) ...................................................................................... .. 11
`
`(4) Mother ’s Restaurants Inc. v. Mother ’s Other Kitchen, Inc.,
`218 U.S.P.Q. 1046 (T.T.A.B. 1983) ....................................................... .. 12
`
`(5) Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 U.S.P.Q.34l
`(T.T.A.B. 1978) ...................................................................................... .. l3
`
`(6) Buti v. Impressa Perosa, S.R.L., 139 F.3d 98, 45 U.S.P.Q.2d 1985
`(2““ Cir. 1998) ......................................................................................... .. 13
`
`B.
`
`International Bancorp Is Bad Law And Should
`Not Be Followed By The Board ......................................................................... .. 14
`
`(1) The International Bancorp Facts ............................................................ .. 14
`
`(2) Why International Bancorp Is Bad Law ................................................ .. 15
`
`(a) All Of The Prior, On—Point Case Law Is Directly Opposite ............. .. 16
`
`(b) Even McCarthy On Trademarks Disagrees ...................................... .. 17
`
`

`
`(c) Only Two Judges On The Panel Agreed, The Other Wrote
`a Scathing Dissent ............................................................................. .. 18
`
`(d) Extension Of The Majority’s Ruling To “Goods,” Results In
`The Unfathomable Outcome That A Mark Is Registerable In
`The U.S. If Goods Are Marked And Sold In A Foreign
`Country To A U.S. Citizen................................................................ .. 18
`
`IV.
`
`MOTION FOR SUSPENSION OF PROCEEDINGS .................................................... .. 22
`
`V.
`
`CONCLUSION ............................................................................................................... .. 22
`
`

`
`TABLE OF AUTHORITIES
`
`PAGEQ S)
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986)........................................................................................................ ..5,6
`
`Buti v. Impressa Perosa, S.R.L.,
`139 F.3d 98 (2"" Cir. 1998) ......................................................................................... .. 13,14
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ........................................................................................................ ..5,6
`
`Imperial Tobacco Limited v.
`Philip Morris, Inc.,
`899 F.2d 1575, 1579-1580 (Fed. Cir. 1990) ........................................................ ..10, 17, 20
`
`Intermed Communications, Inc. v. Chaney,
`197 U.S.P.Q. 501 (T.T.A.B. 1977) ............................................................................. ..11,12
`
`International Bancorp, LLC v. Societe Des Bains
`De Mer et du Cercle Des Etrangers A Monaco,
`329 F.3d 359 (4th Cir. 2003) ......................................................................... .. 2,10,11,14-23
`
`Larry Harmon Pictures Corp. v.
`The Williams Restaurant Corp. ,
`929 F.2d 662 (Fed. Cir. 1991) .......................................................................................... ..9
`
`Linville v. Rivard,
`41 U.S.P.Q.2d 1731 (T.T.A.B. 1996) .................................................................... .. 8-11, 17
`
`Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp.,
`475 U.S. 574 (1986).............................................................................................................6
`
`Moore v. Philip Morris Co., Inc.,
`8F.3d 335 (6th Cir. 1993) .....................................................................................................6
`
`Mother ’s Restaurants Inc. v.
`Mother ’s Other Kitchen, Inc.,
`218 U.S.P.Q. 1046 (T.T.A.B. 1983) ............................................................................12, 13
`
`Niemi v. American Axle Manufacturing & Holding
`Inc., 2006 WL 2077590
`(ED Mich., Southern Division) ............................................................................................5
`
`iii
`
`

`
`TABLE OF AUTHORITIES gcontinuedl
`
`PAGE§S[
`
`Oland ’s Breweries (1971) Limited v.
`Miller Brewing Company,
`189 USPQ 481 (TT&A Bd., 1975) ........................................................................ ..12,13,19
`
`Penta Hotels, Ltd. v. Penta Tours,
`9 USPQ2d 1081 (D. Conn. 1988) ........................................................................................9
`
`Person ’s Co. Ltd. v. Christman,
`900 F.2d 1565 (Fed. Cir. 1990) ........................................................................ ..10,17,21,22
`
`Rivard v. Linville,
`133 F.3d 1446 (Fed. Cir. 1998) ................................................................................... .. 8-11
`
`Stagecoach Properties, Inc. v. Wells Fargo & Company,
`199 USPQ 341 (TTAB 1978) ......................................................................................10,l3
`
`Sterling Drug Inc. v. Knoll A.G. Chemische Fabriken,
`159 U.S.P.Q. 628 (T.T.A.B. 1968) .................................................................................. ..20
`
`United Drug, 248 U.S. at 97,
`39 S.Ct. at 50-51 .............................................................................................................. ..14
`
`United States v. Diebold, Inc.,
`369 U.S. 654 (1962).............................................................................................................6
`
`STATUTES
`
`J. Thomas McCarthy, McCarthy On Trademarks
`And Unfair Competition, §29:2 (4th ed. December, 2005) .............................................. .. 17
`
`15 U.S.C. §1051(b) ........................................................................................................................11
`
`15 U.S.C. §1127.........................................................................
`
`................................. 2,7,14,18-22
`
`37 C.F.R. §2.127(d) .......................................................................................................................22
`
`iv
`
`

`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`
`This action was commenced by Opposer/Petitioner and Counterclaim Registrant Kerzner
`
`International Limited (“Kerzner”), opposing registration of Applicant/Registrant and
`
`Counterclaim Petitioner JEC II, LLC’s (“JEC”) applications to register the marks THE ONE,
`
`ONE and ONE MANHATTAN, Application Serial Nos. 78/436,384, 78/436,394, 78/458,152
`
`and 78/673,849, respectively, and canceling JEC’s registration for the mark ONE
`
`MANHATTAN, U.S. Reg. No. 2, 973,611, based upon Kerzner’s ownershipl of U.S.
`
`Registration Nos. 2,889,998 and 2,971,597, both for the marks ONE & ONLY.
`
`JEC seeks partial summary judgment canceling from Kerzner’s U.S. Reg. No. 2,889,998
`
`(“the ‘998 registration”), the following services:
`
`Hotel or other types of lodging facility services;
`Restaurant services;
`Bar, club or cocktail lounge services;
`Health club services;
`Sports facility services;
`Tennis court services;
`
`Golf club services;
`Golf or tennis tournament services; and
`Golf caddie services.
`
`JEC bases this partial summary judgment request upon one, uncontested fact:
`
`Kerzner has never (not prior to or as of the date it filed its June 8, 2004 Statement
`of Use in the application file that ultimately matured into the ‘998 registration, not
`now and at no time in between), provided any of the above services in the United
`States, or any territory or possession of the United States.2
`
`For purposes of this Summary Judgment Motion only, JEC will admit that U.S. Registration Nos.
`2,889,998 and 2,971,597 are rightfully in the name and ownership of Kerzner.
`
`Hereinafier, “in the United States, or any territory or possession of the United States,” shall be
`referred to simply as, “in the United States.”
`
`_1_
`
`

`
`The question of law the Board will need to answer in this motion, is:
`
`Whether the sought to be cancelled services provided under Kerzner’s alleged
`ONE & ONLY mark are “rendered in commerce,” so as to satisfy the second
`prong of §1 127 ofthe Lanham Act, 15 U.S.C. §1127.
`
`As will be presented in more detail below, the Lanham Act defines “use in commerce”
`
`for services, as follows: “[a] mark shall be deemed to be in use in commerce
`
`on services
`
`when it is used or displayed in the sale or advertising of services and the services are rendered in
`
`commerce...” 15 U.S.C. §1127 (emphasis added).
`
`All federal courts that have ruled on this issue, including the TTAB and the Court of
`
`Appeals for the Federal Circuit, with the odd exception of two (2) federal circuit court judges of
`
`the 4”‘ Circuit Court of Appea1s3, have interpreted the second prong of the above definition of
`
`“use in commerce” to mean that the services in question must be rendered in the United States.
`
`“Prior to today’s holding, all existing authority, employing precisely this same two-pronged
`
`understanding of use, has similarly concluded that use in the United States is necessary to meet
`
`the Lanham Act’s use in commerce requirement.” International Bancorp, 329 F.3d at 383
`
`(Motz, J., dissenting) (emphasis added).
`
`Kerzner has admitted never having provided any of the sought to be cancelled services in
`
`the United States in its responses to JEC’s First Set of Admissions.4 In particular, in response to
`
`JEC’s Admission Nos. 1-8 and 10-175, Kerzner made the following admissions:
`
`3
`
`4
`
`International Bancor , LLC v. Societe Des Bains De Mer et du Cercle Des Etrangers A Monaco,
`329 F.3d 359, 383 (4 Cir. 2003), cert. denied, 540 U.S. 1106, 124 S. Ct 1052 (2004).
`
`In fact, Kerzner was never requested to admit that it has never provided the above “golf caddie
`services” in the United States. JEC is including this service in its list of services to cancel from
`the ‘998 registration, and stating there is no material issue of fact regarding these services based
`upon an assumption by JEC that if Kerzner has admitted to having never provided golf club or
`golf tournament services in the United States, it has also not provided “golf caddie services” in
`the United States.
`
`

`
`RESPONSE |To Admission No. 1 I: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it does not have a resort hotel or other type of lodging
`facility branded with the ONE & ONLY mark and currently physically located in
`the United States or any territory or possession of the United States.
`
`RESPONSE |To Admission No. 2|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it does not have a restaurant branded with the ONE &
`ONLY mark and currently physically located in the United States or any territory
`or possession of the United States.
`
`RESPONSE |To Admission No. 3|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it does not have a bar, club or cocktail lounge branded with
`the ONE & ONLY mark and currently physically located in the United States or
`any territory or possession of the United States.
`
`RESPONSE |To Admission No. 4|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it does not have a health club branded with the ONE &
`ONLY mark and currently physically located in the United States or any territory
`or possession of the United States.
`
`RESPONSE |To Admission No. 5|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it does not have a sports facility branded with the ONE &
`ONLY mark and currently physically located in the United States or any territory
`or possession of the United States.
`
`RESPONSE |To Admission No. 6|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it does not have a tennis court branded with the ONE &
`ONLY mark and currently physically located in the United States or any territory
`or possession of the United States.
`
`RESPONSE |To Admission No. 7|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it does not have a golf club branded with the ONE & ONLY
`
`A copy of Kerzner’s First Responses and Objections to JEC’s First Set of Admissions, is attached
`as Exhibit A to the accompanying Affidavit of Michael R. Gilman, Esq. in support of this
`summary judgment motion (hereinafter “Gilman Ex. _”).
`
`__3_
`
`

`
`mark and currently physically located in the United States or any territory or
`possession of the United States.
`
`RESPONSE |To Admission No. 8|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it does not have a golf or tennis tournament branded with
`the ONE & ONLY mark and currently physically located in the United States or
`any territory or possession of the United States.
`
`RESPONSE |To Admission No. 10 |: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it has not had a resort hotel or other type of lodging facility
`branded with the ONE & ONLY mark that was located in the United States or a
`territory or possession of the United States.
`
`RESPONSE |To Admission No. 11 I: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it has not had a restaurant branded with the ONE & ONLY
`mark that was located in the United States or a territory or possession of the
`United States.
`
`RESPONSE |To Admission No. l2|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it has not had a bar, club or cocktail lounge branded with
`the ONE & ONLY mark that was located in the United States or a territory or
`possession of the United States.
`
`RESPONSE |To Admission No. 13 |: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it has not had a health club branded with the ONE & ONLY
`mark that was located in the United States or a territory or possession of the
`United States.
`
`RESPONSE |To Admission No. 14|: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it has not had a sports facility branded with the ONE &
`ONLY mark that was located in the United States or a territory or possession of
`the United States.
`
`RESPONSE |To Admission No. 15 |: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it has not had a tennis court branded with the ONE &
`ONLY mark that was located in the United States or a territory or possession of
`the United States.
`
`

`
`RESPONSE |To Admission No. 16 |: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it has not had a golf club branded with the ONE & ONLY
`mark that was located in the United States or a territory or possession of the
`United States.
`
`RESPONSE |To Admission No. 17 I: Subject to and without waiving or limiting
`any general or specific objections contained in these responses, Petitioner
`[Kerzner] admits that it has not had a golf or tennis tournament branded with the
`ONE & ONLY mark that was located in the United States or a territory or
`possession of the United States.
`
`Based upon the long acknowledged precedent of this Board, the Court of Appeals for the
`
`Federal Circuit and all other Circuit and District Courts (except the 4"‘ Circuit) who have ruled
`
`on this issue, JEC’s requested partial surmnary judgment canceling the above stated services
`
`from the ‘998 registration is appropriate, as a matter of law, based upon Kerzner’s above
`
`admission responses.6
`
`II.
`
`THE STANDARD OF REVIEW FOR SUMMARY JUDGMENT
`
`Summary judgment is proper if “the pleadings, depositions, answers to interrogatories,
`
`and admissions on file, together with the affidavits, if any, show that there is no genuine issue as
`
`to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.
`
`R. Civ. P. 56(c); see also, Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S. Ct. 2548, 2552
`
`(1986). Summary judgment may be granted when no “reasonable jury could return a verdict for
`
`6
`
`Also, and only for purposes of this summary judgment motion, JEC admits that the first prong of
`the above “use in commerce” test is met by Kerzner. In particular, although JEC believes
`Kerzner has not yet proven its “use or display in the sale or advertising of its services,” for
`purposes of this particular summary judgment motion, only, JEC is not contesting that Kerzner
`used or displayed the ONE & ONLY mark in the sale or advertising of the sought to be cancelled
`services. By making this admission for purposes of this summary judgment motion, JEC is not
`intending to waive, and hereby expressly reserves, any and all rights to later assert and prove
`Kerzner’s failure to meet the first prong requirements for use in commerce of the ONE & ONLY
`mark, at least as of the date, and before the date, of the filing of its June 8, 2004 Statement of Use
`in the ‘998 application file.
`
`_5_
`
`

`
`the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505,
`
`2510 (1986). “The moving party bears the burden of informing this Court of the basis for its
`
`motion and identifying those portions of the record that establish the absence of a material issue
`
`of fact.” Niemi v. American Axle Manufacturing & Holding Inc. , 2006 WL 2077590, p.2 (E.D.
`
`Mich., Southern Division July 24, 2006) (copy attached as Gilman Ex. B) (citing, Celotex, 477
`
`U.S. at 323, 106 S. Ct. at 2553). In determining the existence of a “genuine issue of material
`
`fact” the evidence must be viewed in a light most favorable to the nonmoving party. See, United
`
`States v. Diebold, Inc., 369 U.S. 654, 655 (1962) (“[o]n summary judgment the inferences to be
`
`drawn from the underlying facts contained in such materials must be viewed in the light most
`
`favorable to the party opposing the motion.”)
`
`Once the moving party has met its burden, Rule 56(e) requires the
`nonmoving party to look beyond the pleadings and designate specific facts
`showing that a genuine issue exists for trial. Fed.R.Civ.P. 56(e); Celotex, 477
`U.S. at 322-24, 106 S.Ct. at 2552-53. It is not enough that the nonmoving
`party comes forward with the “mere existence of a scintilla of evidence ...,”
`Anderson, 477 U.S. at 252, 106 S.Ct. at 2512, or some “metaphysical doubt as
`to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp.,
`475 U.S. 574, 586, 106 S.Ct. 1348, 1356 (1986). Rather, the nonmoving party
`must present significant probative evidence in support of its opposition to the
`motion for summary judgment. Moore v. Philip Morris Co., Inc., 8 F.3d 335,
`340 (6'h Cir. 1993).
`
`Niemi, 2006 WL 2077590 at page 2.
`
`

`
`III.
`
`APPLICABLE LAW AND ANALYSIS
`
`A. To Achieve Federal Registration Of A Service Mark, The Services
`Must Take Place (Be Provided) In The United States — Services Provided Solely
`In A Foreign Country, Or Only Promoted, But Not Also Provided, In The
`United States, Are Not Eligible For Service Mark Registration
`
`(1) The Relevant Lanham Act Provision, 15 US. C. §I127
`
`The Lanham Act defines “use in commerce” for services, at 15 U.S.C. §1127, as follows:
`
`The term “use in commerce” means the bona fide use of a mark in the
`
`ordinary course of trade, and not made merely to reserve a right in a mark.
`For purposes of this Act, a mark shall be deemed to be in use in commerce
`on services when it is used or displayed in the sale or advertising of services
`and the services are rendered in commerce, or the services are rendered in
`more than one State or in the United States and a foreign country and the
`person rendering the services is engaged in commerce in connection with the
`services.
`
`Accordingly, §1127 sets forth a two prong test for establishing that a service mark has
`
`been used in commerce. The two prongs being:
`
`Prong 1 —— use or display of the mark in the sale or advertising of the services.
`
`Prong 2 — (i) the services are rendered in commerce, or
`(ii) the services are rendered in more than one State, or
`(iii) the services are rendered in the United States and a foreign
`country and the person rendering the services is engaged in
`commerce in connection with the services.
`
`Pursuant to footnote 6, supra, for purposes of this motion and the narrow legal issue
`
`presented for determination by the Board, JEC admits that the first prong of the above “use in
`
`commerce” test is met by Kerzner.
`
`Since Kerzner has admitted to never having provided the sought-to-be-cancelled services
`
`in the United States, sub—prongs (i), (ii) and (iii) of prong 2 are not met since all of these sub-
`
`

`
`prongs either implicitly (sub-prong (i)) or explicitly (sub-prongs (ii) and (iii)), require rendering
`
`of the services within the United States.
`
`As previously stated, all courts that have ruled on the issue presented in this motion,
`
`including, in particular, decisions out of this Board and out of the Federal Circuit Court of
`
`Appeals, have ruled “use in commerce” for services requires providing the services in issue in
`
`the United States, and therefore, all of these courts would be in favor of cancellation of the
`
`requested services from the ‘998 registration.
`
`(2) Linville v. Rivard, 41 U.S.P.Q.2d 1731 (T.T.A.B. 1996), aff’d., Rivard
`v. Linville, 133 F.3d 1446, 45 U.S.P.Q.2d 1374 (Fed. Cir. 1998)
`
`The situation in the Linville case and the resulting issue decided by the Board and
`
`affirmed by the Court of Appeals for the Federal Circuit, is squarely on point with the issue
`
`presently before the Board in this summary judgment motion: Has the respective mark been
`
`used in commerce in connection with the services if the services are only provided outside of the
`
`United States.
`
`In Linville, Mark Linville petitioned the Board to cancel the registration for the mark
`
`ULTRACUTS for hair dressing and beauty salon services, registered in the United States to
`
`Meril Rivard, a Canadian citizen, pursuant to Section 44(e) (not use in commerce). The
`
`difference between Linville’s petition for cancellation and JEC’s petition herein, is that Rivard
`
`had a validly issued Section 44(e) registration which Linville petitioned to cancel based upon
`
`Rivard’s alleged abandonment of the mark for his failure to use the mark for the then statutory
`
`period of 2 years. In only slight contrast, JEC is herein moving to cancel some of the services of
`
`the ‘998 registration that were invalidly issued, ab initio, for failure of the mark to ever have
`
`been used in connection with these services in the United States.
`
`_3_
`
`

`
`As in the summary judgment motion herein before the Board, the respondent in the
`
`Linville case, Mr. Rivard, “admitted in his answer that he did not personally use the mark
`
`ULTRACUTS in the United States in connection with the rendering of hair dressing and beauty
`
`salon services.” Linville, 41 U.S.P.Q.2d at 1735. As has above been made a part of this motion,
`
`Kerzner has also admitted to having never operated or provided any of the sought-to-be-
`
`cancelled services of the ‘998 registration under the ONE & ONLY mark, in the United States.
`
`All of the case law both parties in this dispute will put before the Board to help decide
`
`this motion agree that advertising in the United States does not, by itself, establish use in
`
`commerce of a mark. “We reject respondent’s argument that through his advertising, he has
`
`used the mark ULTRACUTS in the United States continuously since 1986.” Id. at 1736.
`
`Accordingly, the Board in Linville was faced with having to make the same legal determination
`
`that the Board must make in this motion; 1'. e., was Rivard’s use of the name ULTRACUTS in his
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`operation of hair dressing and beauty salons in Canada, which salons were traveled to and used
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`by United States citizens, sufficient (along with Rivard’s uncontested advertising of its services
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`in the United States) to prove use in commerce of the mark in the United States?
`
`The Linville Board answered this question with a resounding “NO:”
`
`Similarly, we reject respondent’s argument that his services are rendered
`in commerce because commerce is affected by the travel of customersfrom
`the United States to respondent ’s Canadian salons. In support of his
`position, respondent relies on Larry Harmon Pictures Corp. v. The Williams
`Restaurant Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991) and Penta
`Hotels, Ltd. v. Penta Tours, 9 USPQ2d 1081 (D. Conn. 1988). However,
`those cases involved services which were actually rendered in the United
`States, i.e., a restaurant located in Tennessee and a hotel in New York which
`attracted interstate travelers. This case is readily distinguishable as
`respondent rendered no hair dressing and beauty salon services in the United
`States during the relevant time period.
`
`***
`
`_9_
`
`

`
`The question here is a right to registration. A foreign trademark may be
`known by reputation in this country and may even be protectible under
`concepts of unfair competition, but such mark is not entitled to either initial
`or continued registration where the statutory requirements for registration
`cannot be met. [Imperial Tobacco Limited v. Philip Morris, Inc., 899 F.2d
`1575, 1580,] 14 USPQ2d [1390,] 1393 [(Fed. Cir. 1990)].
`
`It is well settled that activity outside the United States does not create
`rights in marks within the United States. See Stagecoach Properties, Inc. v.
`Wells Fargo & Company, 199 USPQ 341 (TTAB 1978). The concept of
`territoriality is basic to trademark law. See Person ’s Co. Ltd. v. Christman,
`900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990). Thus, thefact that United
`States residents have availed themselves of respondent’s services while in
`Canada does not constitute technical trademark use ofrespondent’s service
`mark which is sufficient to obtain or maintain a registration in the United
`States. (emphasis added)
`
`Id. at 1736-1737.
`
`The Federal Circuit affirmed on this exact issue:
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`Linville established a primafacie case that Rivard abandoned the
`ULTRACUTS mark because he did not use it in connection with hair dressing
`and beauty salon services in the United States during the relevant time period.
`(emphasis added)
`
`Rivard v. Linville, 133 F.3d 1446, 1449, 45 U.S.P.Q.2d 1374 (Fed. Cir. 1998). In this regard,
`
`JEC agrees with J. Motz in her dissent in International Bancorp. , wherein she states:
`
`The majority mistakenly attempts to diminish Rivard ’s precedential value, by
`explaining at length that this 1998 opinion was preceded by a prior
`unpublished opinion vacating an earlier TTAB decision. See ante at 375-3 77.
`In fact, the Federal Circuit’s 1998 opinion does indeed constitute recent
`precedent on this precise issue, and clearly holds that the TTAB correctly
`concluded that “activity outside of the United States does not create rights in
`marks within the United States,” 41 U.S.P.Q.2d at 1736; Rivard, 133 F.3d at
`1449-50. The resulting rule is unambiguous: in order for a service mark to
`qualify for U.S. trademark protection, the services to which that mark attaches
`must be rendered in commerce in the United States.
`
`International Bancorp, 329 F.3d at 389-390 (J . Motz, dissenting). Add to this the fact that, as
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`above indicated in the bolded quotes from pages 1736 and 1737 of the Board’s Linville case,
`
`_10_
`
`

`
`Linville also addressed the only other possible ground for distinguishing International Bancorp;
`
`i. e. , that United States consumers traveled to and were provided the services in Canada, and it is
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`plain to see that the 4”‘ Circuit’s J. Motz had it right and that the International Bancorp majority
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`was wrong.
`
`(3) Intermed Communications, Inc. v. Chaney, 197 U.S.P.Q. 501
`1T.T.A.B. 1977)
`
`Intermed was an opposition proceeding commenced to stop registration of the mark
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`INTERMED, based upon the application being void, ab initio, because of the applicant’s failure
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`to use the mark in commerce in connection with the services of the application on or before the
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`filing date of the application.7 The holding of the Board in Intermed, as with its holding in
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`Linville, above, addresses head-on and unequivocally answers once again the exact issue raised
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`in the present motion: Has the respective mark been used in commerce in connection with the
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`services if the services are only provided outside of the United States; and even if provided to
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`United States citizens.
`
`The Intermed decision speaks for itself, as follows:
`
`Even if the application had been initially filed in the name of The Thomas
`A. Dooley Foundation, Inc. it would have been invalid and incapable of
`resulting in a registration because the mark had never been used in this
`country on or prior to the filing date in association with the services described
`in the application.
`
`***
`
`7
`
`The application which was the subject of the Intermed case was Serial No. 46,190, filed March
`10, 1975, which date is well before the Trademark Statute was amended to allow the filing of
`intent to use applications under Section 1(b), 15 U.S.C. 1051(b). Accordingly, if it was
`determined that no use of the mark in commerce had occurred on or before the filing date of the
`application, the application would be void ab initio and invalid.
`
`-11-
`
`

`
`The statute requires not only the display of the mark in the sale or
`advertising of services but also the rendition of those services in order to
`constitute use of the service mark in commerce. The record is devoid of any
`evidence that the services described in the application were offered, promoted,
`advertised or rendered to anyone in the United States or in commerce under
`the term “INTERMED” prior to or contemporaneously with the filing of the
`application.
`
`While the statute is a little more general in describing the kind of use that
`con